Free Supplement/Amendment - District Court of Colorado - Colorado

Case 1:00-cv-02229-JLK-KLM

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 1:00-cv-02229-JLK CAUGHT FISH ENTERPRISES, LLC, a Colorado limited liability company, and METAL ROOF INNOVATIONS, LTD., a Colorado corporation Plaintiffs, vs. CONTEK, INC., d/b/a SNOW MANAGEMENT SYSTEMS, a Vermont corporation Defendant.

REPORT IN FURTHER SUPPORT OF PLAINTIFFS' MARKMAN POSITIONS

Plaintiffs Caught Fish Enterprises, LLC and Metal Roof Innovations, Ltd. (collectively "Plaintiffs") and Defendant Contek, Inc., d/b/a Snow Management Systems ("Contek") completed briefing of disputed claim construction issues in January 2002. By Order dated April 13, 2006 (Docket #48), the Court requested that the parties update their positions and the law concerning those disputed issues. The following constitutes Plaintiffs' update and report. I. "BLUNT-NOSED SCREW" AND "SCREW" The parties agree that the disputed claim terms "screw" and "blunt-nosed screw" both mean a blunt-nosed screw. The parties also agree that a blunt-nosed screw must include three component parts, a blunted forward end, followed by a threaded shaft, followed by a tool connection member, such as a slot to accept a driving device. The parties disagree, however, on

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whether a blunt-nosed screw must be a unitary structure or can be comprised of several separate parts. Plaintiffs argue that a person of skill in the art in 1993 understood "blunt-nosed screw" to ordinarily and normally mean both unitary and multi-part threaded structures. Plaintiffs supported this understanding with unrebutted testimony of Robert Haddock, an individual with more than 30 years experience in the field of metal roof design, installation and repair, and unrebutted statements of a U.S. Patent and Trademark Office Examiner expressed during prosecution of a relevant Contek patent application. Next, Plaintiffs showed that nothing in the text of the asserted patents excluded use of multi-part fasteners. Finally, Plaintiffs showed that nothing occurred during prosecution of either U.S. Patent No. 5,228,248 ("the '248 patent") or U.S. Patent No. 5,983,588 ("the '588 patent") to unambiguously disclaim use of a multi-part fastener was part of the claimed clamping systems. In response, Contek argued that Mr. Haddock's and the Examiner's statements should be summarily rejected and that "blunt-nosed screw" should be defined solely in light of several definitions listed in a 1995 edition of The General Usage Webster's Collegiate Dictionary. Next, Contek argued that the '248 and '588 patents' specifications fully supported the notion that a "blunt-nosed screw" could be a unitary structure. Finally, Contek argued that statements made during prosecution of the '248 and '588 patents removed multi-part blunt-nosed screws from the definition of blunt-nosed screw. Recent law shows Plaintiffs' approach to claim construction is correct and demonstrates that Contek's arguments are contrary to law.

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A.

The Law Of Ordinary Meaning

We have frequently stated that the words of a claim "are generally given their ordinary and customary meaning." [Citations omitted.] We have made clear, moreover, the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. [Citations omitted.] The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. [Citation omitted.] That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. [Citations omitted.] Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). The unrebutted testimony of Mr. Haddock, the sole named inventor of the '248 and '588 patents, shows that those working in the field of standing seam metal roofs had a clear understanding that metal roof fasteners could be either a unitary or a multi-piece fastener. That unrebutted testimony shows that the ordinary and customary meaning of the term "blunt-nosed screw," as used in the claims of the '248 and '588 patents must include both a unitary and a multipart structure as a matter of law. B. Use Of Dictionary Definitions To Construe Claims

The Federal Circuit has recently affirmed that technical dictionaries and treatises can be used as evidence during the process of claim construction, stating: We have especially noted the help that technical dictionaries may provide to a court "to better understand the underlying technology" and the way in which one of skill in the art might use the claim terms. [Citation omitted.] Because dictionaries, and especially technical dictionaries, endeavor to collect the accepted meaning of terms used in various fields of science and technology, those resources have been properly recognized as among many tools that can assist the court in determining the meaning of particular terminology to those of skill in the 3

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art of the invention. [Citation omitted.] Such evidence, we have held, may be considered if the court deems it helpful in determining "the true meaning of language used in the patent claims." [Citation omitted.] Phillips, 415 F.3d at 1318. To be relevant, however, the dictionary from which proposed definitions are advanced must have been publicly available at least as of the issue date of the tobe-construed patent. Inverness Med. Switz. GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1369-70 (Fed. Cir. 2002). Contek has advanced definitions of "blunt," "nose" and "screw" from a general usage dictionary, not a technical dictionary and does not necessarily show how a person of skill in the art of metal roof design and installation would understand those particular words. More importantly, the definitions certainly do not show how a skilled artisan would understand the actual claim term "blunt-nosed screw," as that relevant term does not even exist in the dictionary relied upon by Contek. Just as important, there is nothing in Contek's proffered dictionary definitions establishing that a "screw" must be a unitary structure. Finally, the '248 patent was filed in July of 1992 and issued in July of 1993. The Merriam Webster's Dictionary definitions relied upon by Contek were not published until sometime in 1995. The dictionary definitions are thus legally irrelevant. Id. C. The '248 And '588 Patent Specifications Do Not Unequivocally Disavow Use Of A Multi-Part "Blunt-Nosed Screw" And "Screw"

The claims, of course, do not stand alone. Rather, they are part of "a fully integrated written instrument," [citation omitted] consisting principally of a specification that concludes with the claims. For that reason, the claims "must be read in view of the specification, of which they are a part." [Citation omitted.] . . . Consistent with that general principal, our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the 4

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inventors' lexicography governs. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive. [Citation omitted.] Phillips, 415 F.3d at 1315-16. Nowhere in the specification of the '248 or '588 patents did Mr. Haddock indicate that "blunt-nosed screw" or "screw" must be a unitary structure. Rather, as outlined in Plaintiffs' opening brief, there is substantial specification support showing that various types of devices, including multi-part devices, could be used to secure a clamp to the standing seam of a metal roof. Contek cites nothing to the contrary. D. Events Occurring During Prosecution Did Not Change The Ordinary And Customary Meaning Of "Blunt-Nosed Screw" And "Screw"

We indulge a "heavy presumption" that claim terms carry their full ordinary and customary meaning, [citation omitted] unless the patentee unequivocally imparted a novel meaning to those terms or expressly relinquished claim scope during prosecution [citation omitted]. [The Court, however, declines] to apply the doctrine of prosecution disclaimer where the alleged disavowal of claim scope is ambiguous. For instance, in Northern Telecom . . . , the accused infringer relied on remarks made by the inventors to overcome a rejection as the basis for narrowing the broad language of the claims. Having independently considered the prosecution history, we view the inventors' statements as amenable to multiple reasonable interpretations and deemed the remarks so ambiguous that, "like the district court, we simply cannot tell." [Citations omitted.] Since the prosecution statements were "far too slender a reed to support the judicial narrowing of a clear claim term," we decline to apply the doctrine of prosecution disclaimer under those circumstances. [Citations omitted.] Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-24 (Fed. Cir. 2003).

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Under the law of Omega Eng'g, it is Contek's heavy burden to show that Mr. Haddock or his counsel somehow unambiguously and expressly stated that the claimed "blunt-nosed screw" must be a unitary structure. No such unambiguous and express statements were ever made. Indeed, the issue of whether a screw would be a unitary structure versus a multi-part structure never even arose during prosecution of the '248 or '588 patents. E. Recent Relevant Case Law Analogously Supports The Correctness Of Defining "Screw" To Embrace Both Unitary And Multi-Part Structures

In Riverwood Int'l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346 (Fed. Cir. 2003), the Federal Circuit was called upon to decide whether the term "flight bars" should be limited to a unitary structure or could include multi-part structures: After a de novo review of the entire record, [the Federal Circuit was] in accord with the district court and [found] no reason to limit the term flight bars to a unitary structure. The term "flight bars" is used generally throughout the patents and consistently refers to a structure that intersects articles on a conveyor, forms groups, and moves the articles. Nothing in the claim language, specification, or prosecution history suggests that the flight bars must be of a unitary structure. The district court, consistent with our guidance that a claim term is to be given "the full range of its ordinary meaning as understood by an artisan of ordinary skill," [citation omitted] instructed the jury not to limit the term to the unitary structure found in the specification. We agree with that conclusion. Id., at 1358. In Utica Enter., Inc. v. Fed. Broach and Mach. Co., No. 04-1038, 2004 U.S. App. LEXIS 17608 (Fed. Cir. Aug. 19, 2004), the Federal Circuit was called upon to decide whether a "tool holder" was limited to a single, one-piece structure, or could embrace a multi-piece structure. In Utica, the Federal Circuit found the district court had erred in interpreting "tool holder" to be a single, one-piece structure, stating:

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As an initial matter, the claims themselves to not address whether the tool holder must be a one-piece structure or may be constructed from multiple pieces. The district court concluded nonetheless that a multi-piece tool holder would frustrate claim 1's instruction. . . . Id. at *7. The Federal Circuit disagreed, stating, "[f]ar from demanding a unitary structure for the tool holder, the claim language simply describes how the cutting tool and the tool holder are to be aligned with respect to one another," and said nothing about whether the tool holder must be a one-piece device. Id. at *8. The Federal Circuit next discussed the patent's specification, finding that while it only depicted a one-piece tool holder, there was no text disclaiming use of tool holders constructed of multiple components. Id. Finally, in Atlantic Constr. Fabrics, Inc. v. Dandy Prods., Inc., No. 02-1451, 2003 U.S. App. LEXIS 7724 (Fed. Cir. Apr. 23, 2003), the Federal Circuit was called upon to decide the meaning of the term "filter." The Federal Circuit found that the district court had properly construed "filter" to mean either a unitary or multi-part structure. The court based its finding upon the fact that neither the claim, specification nor the prosecution history of the patent disclaimed use of multi-component "filters" or expressly defined a "filter" as a single unitary structure. Id. at *9-10. Each of these cases, along with the Pall case cited in Plaintiffs' primary brief, establish that, absent some clear disclaimer or disavowal in either the claim, patent specification or prosecution history, terms should be given their broad meaning, which usually encompasses both multi-part and unitary structures designed to accomplish the recited goal.

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II.

MEMBER POSITIONABLE WITHIN A HOLE AND BEING EXTENDABLE WITHIN A SLOT OR CAVITY Asserted claims of the '588 patent require a "member" that is positionable within a hole

and that is extendable within a slot or a cavity. The parties' dispute centers on whether "member" must be a unitary blunt-nosed screw or, as Plaintiffs have proposed, can be any unitary blunt-nosed fastening structure or multi-piece blunt-nosed fastening assembly. In May of 2002, the Federal Circuit had the opportunity to decide CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). In CCS, the claim term in dispute was "reciprocating member." In that case, the Federal Circuit held that the ordinary meaning of "member" encompassed both unitary and multi-component structures. Id. at 1367. Next, the Federal Circuit found that the defendant had not shown anything in the specification or prosecution history which would overcome that ordinary meaning, stating. The specification never requires a certain number of components or certain shape; nor does it limit the "member" in either regard. Contrary to the district court's analysis, moreover, the specifications did not need to include a drawing of a multi-component, curved member for the claimed invention to cover that particular embodiment. The drawings merely illustrated a particular embodiment of the claimed member and the specifications did not clearly assign a unique definition to "member," distinguish "member" based on the prior art, disclaim subject matter or describe a single-component, straight-bar "member" as important to the invention. Nor does the prosecution history contain any clear statements that would narrow the ordinary meaning of the claimed "member." Id. Contek does not seriously contest that the plain and ordinary meaning of "member" encompasses either a blunt-nosed unitary structure or a multi-component fastening structure. Rather, Contek attempts to limit the meaning of "member" to a unitary blunt-nosed screw by 8

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relying upon events occurring during prosecution of the '248 and '588 patents. None of the prosecution statements relied on by Contek, however, show that Mr. Haddock or his counsel limited "member" to a unitary structure. Rather, statements relied upon by Contek show only that Mr. Haddock and his counsel limited "member" to a blunt-nosed fastening device. III. "CROSS-MEMBER INTERCONNECTABLE WITH SAID CLAMP MEANS" AND "SECURING A MEMBER" The parties also dispute the interpretation of "cross-member interconnectable with said clamp means" and "securing a member." Plaintiffs have nothing new to add with regard to its position on construction of these claim terms. IV. "EXTENDABLE INTO SAID SLOT TO ENGAGE/DEFORM" AND "POSITIONABLE WITHIN SAID FIRST AND SECOND HOLES TO SECURE SAID RAISED PORTION WITHIN SAID SLOT BY ENGAGING" Contek argues that the claim phrases "extendable into said slot to engage/deform" and "positionable within said first and said second holes to secure said raised portion within said slot by engaging" require a "screw" to enter the cavity of the clamp and physically contact and deform the roof seam. Plaintiffs do not disagree with this proposed construction, as it is Plaintiffs' position that the claimed "screw," "blunt-nosed screw" and "member" are not limited to a unitary threaded shaft, but also includes multi-part fastening structures, such as Contek's two-piece blunt-nosed screw. V. CONCLUSION For the above set forth reasons and for the reasons set forth in its previous briefing, Plaintiffs request that the Court interpret the following contested claim terms as follows:

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The `248 Patent Blunt-Nose Screw = A unitary or multi-part device having a rotating tool connection member, threaded shaft and blunt end portion. = Attaching, directly or through another device or assembly, by any means or mode, a cross-member to two separate clamps.

Cross-Member Interconnected with a First and Second Clamp

The `588 Patent Blunt-Nose Screw or Screw Securing a Member to Said First and Second Clamp Means = A unitary or multi-part device having a rotating tool connection member, threaded shaft and blunt end portion. = Attaching, directly or through another device or assembly, by any means or mode, a member to two separate roof clamps.

Member Positionable Within = Any unitary blunt-nosed structure or multi-piece a Hole and Being Extendable Within blunt-nosed assembly which is wholly or partially a Slot or Cavity positionable within a fastening hole and which has a component that is extendable into a clamp cavity. Mounting Cavity = A hollowed-out space in a mass, such as a channel, to facilitate attachment of a device, such as a brace, bracket or snowguard, to a surface of a clamp body. Respectfully submitted,

Dated: April 30, 2006

By:

s/ Robert R. Brunelli Robert R. Brunelli [email protected] SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 (303) 863-9700 [email protected] ATTORNEYS FOR PLAINTIFFS CAUGHT FISH ENTERPRISES, LLC AND METAL ROOF INNOVATIONS, LTD. 10

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CERTIFICATE OF SERVICE

I hereby certify that on this 30th day of April, 2006, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following e-mail addresses:

Donald Degnan, Esq. [email protected] Holland & Hart, LLP 1800 Broadway, Suite 300 Boulder, Colorado 80302-5144 s/ Lori R. Brown Lori R. Brown Assistant to Robert R. Brunelli SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 E-mail: [email protected] [email protected]

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